IA No.6749/2019 (of the plaintiff u/O XXXIX R-1&2 CPC).

1. The plaintiff has instituted this suit against (i) EG Pharmaceuticals; (ii) Zydus Healthcare Ltd.; and, (iii) Biochem Pharmaceuticals Industries Ltd., for permanent injunction to restrain the defendants from infringing the registered trade mark ‘OTRIVIN’ of the plaintiff, by adopting the mark ‘BIOTRIVIN’ for the same goods i.e. nasal decongestant, and thereby passing off their goods as that of the plaintiff, and for ancillary reliefs.

2. It is the case of the plaintiff in the plaint, that (i) the plaintiff is the registered proprietor of the trade marks ‘OTRIVIN’, the device “IMAGE” and ‘OTRIVIN PERFECT NIGHT’; (ii) the product under the said trade mark were launched first in the year 1956 in Finland; (iii) the earliest launch of ‘OTRIVIN’ product in India can be traced back to the 1980s; (iv) according to the Stockists Secondary Audit conducted by the IMS Health Information and Consulting Service India Private Limited, the product sold under the mark ‘OTRIVIN’ was the top selling nasal decongestant in India from the year 2006 till the year 2010, with sales of Rs.21.2 crores in the year 2006 and of Rs.41 crores in the year 2010; (v) the plaintiff is also the owner of the domain names www.otrivin.com and www.otrivin.co.in, incorporating the trade mark ‘OTRIVIN’; (vi) the predecessor-in-interest of the plaintiff became aware of ‘BIOTRIVIN’ mark filed for registration by defendant no.3, when it was advertised in Trade Mark Journal dated 1st July, 2007; (vii) the predecessor-in-interest of the plaintiff filed an opposition dated 23rd January, 2008 to the application of the defendant no.3 for registration; (viii) however vide order dated 28th February, 2018, the said opposition was dismissed as being time barred and the application of the defendant no.3 proceeded to registration on 1st March, 2018; (ix) however due to non-filing of a renewal request within the prescribed statutory time period of six months by the defendant no.3, the registration has thereafter lapsed; (x) the enquiries of the plaintiff at this time revealed that the product was not available in the retail market in pharmacies and the status remained unchanged till the filing of the present suit; (xi) however in April, 2019, the product was found on the online pharmacies www.medplusmart.com and www.genericwala.com; (xii) a test purchase made by the plaintiff on 4th April, 2019 was delivered in Delhi; and, (xiii) the members of the trade, as also the consumers will be misled by the products made available in a clandestine manner by the defendants under the mark ‘BIOTRIVIN’ by imagining them to be of the plaintiff and purchasing them.

3. The suit came up before this Court first on 8th May, 2019, when though was entertained but no ex parte relief as sought granted.

4. The defendant no.2 Zydus Healthcare Ltd. has filed a written statement contesting the suit, pleading that (i) the defendant no.1 is not at all concerned with the subject dispute and is merely a manufacturer of the product under the trade mark of the defendant no.2; (ii) the defendant no.3 was dissolved and merged with the defendant no.2 vide order dated 15th March, 2017 of National Company Law Tribunal, Ahmedabad; (iii) the plaintiff has thus indulged in masking of the real defendants, to prevent detection of the matter in the cause list by the defendants; (iv) the defendants’ mark ‘BIOTRIVIN’ is not deceptively similar to the mark ‘OTRIVIN’; (v) the defendant has been continuously using the mark ‘BIOTRIVIN’ since 2007 and is thus protected under Section 28(3) of the Trade Marks Act, 1999; (vi) the plaintiff has no goodwill or reputation in the mark ‘OTRIVIN’; (vii) no notice under Section 25(3) of the Trade Marks Act was ever issued by the Registrar of Trade Marks before expiration of the last registration of the mark of the defendant; (viii) even the Trade Mark Registry website status shows the mark ‘BIOTRIVIN’ to be registered and valid, and the plaintiff has mischievously pleaded the registration to have lapsed; (ix) the plaintiff is aware of the manufacturing licence granted in 2007 and renewed in July, 2012; (x) the defendant’s product ‘BIOTRIVIN’ PAED Nasal Drops are sold in the market since 2008 and it is within the knowledge of the plaintiff that the defendants are using the mark since then, with the acquiescence of the plaintiff; (xi) the predecessor-in-interest of the plaintiff did not pursue the opposition filed to the application of the defendant for registration; (xii) no appeal before the Intellectual Property Appellate Board has been preferred by the plaintiff against the order dated 28th February, 2018 of rejection of its opposition; (xiii) the plaintiff has also not sought cancellation of the defendant’s mark; (xiv) the defendant will take requisite action for renewal of its mark ‘BIOTRIVIN’; (xv) neither infringement nor passing off has been committed by the defendant; (xvi) “the quality of ‘BIOTRIVIN’ is far better and superior than that of the plaintiff’s product ‘OTRIVIN’”; and, (xvii) all the defendants are located outside Delhi and this Court does not have territorial jurisdiction.

5. Before proceeding further, it is necessary to pronounce on the manner of drafting of pleadings which has come to light on reading of the written statement of the defendant. The written statement of the defendant is replete with “wrong and denied”, with the defendant having denied each and every averment in the plaint of the plaintiff. Both, the plaintiff GSK Consumer Healthcare SA and defendant No.2 Zydus Healthcare Ltd. are renowned pharmaceuticals companies, often competing with each other and it is difficult to believe that one would not be keeping a tab on the affairs of the other and not comparing its performance with the other. In such state of affairs, their officials/representatives authorised to sign pleadings, cannot continue to make pleadings of “wrong and denied”, putting the opposite party to proof of each and every averment in the pleadings. Such form of pleadings, though may have been practiced in yester years and may have been the norm, cannot be allowed to continue to be made in today’s time of statutory disclosures required to be made and of information explosion, when the minutest details of every person, especially a large corporate, are out in the public domain for all to see. The “wrong/incorrect and denied” form of pleadings originated in an era where litigation was generally between individuals, who had limited means of knowing the affairs of their opponent in litigation. It is no longer so.

6. The Commercial Courts Act not only created Commercial Courts and Commercial Appellate Courts for adjudication of disputes which have been classified as ‘Commercial dispute’, but also provides for a procedure different from that followed by Courts dealing with ordinary or non-commercial suits. Vide the said Act, several provisions of the Code of Civil Procedure, 1908 (CPC), in their application to the Commercial Courts, have been amended and the Act has been given overriding effect “notwithstanding anything inconsistent therewith contained in any other law for the time being in force”. The Act is aimed at expeditious disposal of the commercial suits, and appeals against the orders of Commercial Courts. However, the same cannot be abided by the Commercial Courts and the Commercial Appellate Divisions, without the litigants and the advocates also pitching in and adopting to the said change. The litigants and the advocates, if continue to indulge in the ‘game’ of litigation, as they have in the past, would be doing disservice to the legislative mandate. The timelines cannot be abided by, if pleadings, of denying each and every averment of the opposite party, even those which are easily verifiable, continue to be made, in an attempt to put the opposite party to proof thereof. Such pleadings result in a large number of issues being framed and voluminous evidence being required to be led and consequent longer time in perusal and appreciation thereof, leading to delays in adjudication, and the timelines being not met.

7. The defendant in the present case, for instance, is found to have also denied (i) that the plaintiff is a member of GlaxoSmithKline Group of Companies; (ii) that the GlaxoSmithKline Group is a global healthcare group involved in research, development, formulation of vaccines etc.; (iii) that GlaxoSmithKline Group has operations in 150 countries with 75 manufacturing sites in 30 countries; (iv) that GlaxoSmithKline Group has been present in India for over 90 years; (v) that the plaintiff is the proprietor of the mark ‘OTRIVIN’; (vi) that the mark ‘OTRIVIN’ has any goodwill; (vii) that the mark ‘OTRIVIN’ has been advertised and promoted; (viii) that this Court has territorial jurisdiction (when sale of goods under the mark ‘BIOTRIVIN’ within the jurisdiction of this Court is not denied); and, (ix) that ADVAIR/SERETIDE, AVODART, FLOVENT, AUGMENTIN, LOVAZA AND VENTOLIN are top selling pharmaceutical products of GlaxoSmithKline Group etc.

8. Order VIII of the CPC as applicable to Commercial suits has also been amended to the said effect, including the form of verification. However verifications of pleadings continue to be made as before, in total ignorance of the said amendment. Order VIII Rule 3A requires that verification be done with reference to each allegation in the pleading and the denial of the allegation of the other is required to be accompanied with reasons for doing so as well as the own version of pleadings of the plaintiff. However in disregard thereto, the defendant, though has indulged in filing written statement replete with “wrong and denied”, but has not stated reasons therefor or its own version. For instance, when the defendant denies the volume of business pleaded by the plaintiff, the defendant is required to plead the value of business of the plaintiff according to the defendant, and figures in relation whereto are in public domain. The defendant has also disputed the plaintiff’s valuation, without stating reasons for doing so.

9. In the face of such pleadings, the only option which will be left to the Courts would be to either reject the pleadings in accordance with the Commercial Court Act, or to requisition the presence before the Court of the official of the parties expected to be in the know of things, and quiz him/her in the Court.

10. While on the subject, another anomaly frequently coming to the notice of this Court may be highlighted. Pleadings, especially emanating from the offices of the advocates dealing in suits relating to intellectual property rights, are found to be signed, verified and supported by affidavits, not of the official of the plaintiff/defendant in the know of facts pleaded, but of the in house advocate/personnel of such office. No credence can be given to such pleadings. The plaint in the present case is found to be signed and verified by a person whom the defendant alleges to be part of the office of the advocate filing the plaint. The written statement is signed and verified, though by an official of the defendant, but who has merely described himself as authorised signatory of the defendant, without disclosing his designation. If the said signatory is merely an official in the legal department of the defendant, he cannot be said to be in the know of the commercial facts pleaded by the plaintiff and which have been denied as wrong, without pleading the correct figures according to the defendant.

11. Though I have in Vifor (International) Ltd. Vs. Suven Life Sciences Ltd. 2019 OnLine Del 7514 and Zee Entertainment Enterprise Ltd. Vs. Saregama India Ltd. 2019 SCC OnLine Del 10215 lamented on these aspects but alas, the same have served no purpose.

12. Coming back to the merits of the case, the counsel for the plaintiff, besides what is pleaded, has argued (i) that the written statement though filed beyond the prescribed time, is not accompanied with any application for condonation of delay; (ii) that the plaintiff, in Part-IIIA file, at page 12, has filed a certificate dated 17th October, 1956 of registration of the mark ‘OTRIVIN’ in favour of Ciba Limited, and till pages 43 has filed the transmission thereof till plaintiff; (iii) the plaintiff, at pages 114 and 115 has filed the Stockist Secondary Audit of IMS Health Information and Consulting Services India Private Limited, showing the value of the Nasal Decongestant market and the top 10 brands, and which show the market value of the product of the plaintiff in the year 2010 to be Rs.23.2 crores; (iv) that the plaintiff, at pages 105 to 108, has filed the printouts of the India specific website of the plaintiff; (v) that this Court in Pankaj Aluminium Industries Pvt. Ltd. Vs. Bharat Aluminium Company Ltd. 2011 SCC OnLine Del 1482 has held the doctrine of single economic entity to be not only well established, but also recognised by Courts; (vi) that the defendants applied for registration of the trade mark ‘BIOTRIVIN’ on 16th November, 2005, on proposed to be used basis, and have obtained drug licence on 17th April, 2007; however the said drug licence is not specific to ‘BIOTRIVIN’; (vii) that the defendants claim to have manufactured the medicines under the impugned mark ‘BIOTRIVIN’ since 2008, and the earliest invoice filed by the defendant is of 5th June, 2008; (viii) the predecessor-in-interest of the plaintiff, on 23rd January, 2008 filed its opposition to the application for registration of ‘BIOTRIVIN’ i.e. before the commencement of manufacture by the defendant of goods under the impugned mark, thereby putting the defendant to notice of the opposition/objection of the plaintiff; (ix) the manufacture even if any by the defendant thereafter, with knowledge of the objection/opposition of the plaintiff, is at the own peril of the defendant and the defendant cannot oppose the interim injunction sought by the plaintiff on the ground of delay and latches; reliance in this regard is placed on Hindustan Pencils Pvt. Ltd. Vs. India Stationery Products Co. AIR 1990 Delhi 19 holding that “the defendant must have known that it was adopting a mark which belongs to some one else. Any infringer who uses or adopts some one else's mark must be aware of the consequences which may follow. The defendants ran the risk in using a mark which belonged to some one else. It continued its business uninterruptedly for a number of years before any action was taken by the plaintiffs against it. Any growth after notice is at the risk and peril of the defendant. The defendant certainly had notice of application of the plaintiff having been filed against it in the year 1985 for cancellation of registration of the copyright. The defendant should have been warned, at that stage, that the plaintiff is not likely to accept the user of its mark by the defendant. If the defendant continued to do business by using the impugned mark, it did so at its own peril. The continued user cannot be set up as a defense under these circumstances.”; (x) that the opposition by the predecessor-in-interest of the plaintiff to the application for registration of the defendant has been dismissed on the technical ground of being barred by time; (xi) that though the impugned mark, on dismissal of opposition of the predecessor-in-interest of the plaintiff, proceeded to registration but the said registration has lapsed and the plaintiff is thus entitled to maintain the suit, also for infringement; (xii) that the defendant applied for registration on 16th November, 2005; the first renewal became due on 16th November, 2015; registration was granted on 28th February, 2018 i.e. after the due date; that the defendant was required to, within six months of registration, apply for renewal of registration, but has not done so; (xiii) that the mark of the defendant is thus liable to be removed from the Register; removal is a ministerial act and merely because the mark, though liable to be removed has not been removed from the Register till date, does not have any effect and on expiry of the period prescribed for renewal, the mark cannot be treated as registered; attention in this regard is invited to Section 25 of the Trade Marks Act and Rules 58 and 60 of the Trade Marks Rules 2017; thus Section 124(5) of the Trade Marks Act is not applicable; (xiv) till the date of institution of this suit, the defendant had not applied for renewal of registration; (xv) that since there is no mark in law on the Register, the plaintiff could not have applied for removal of the mark or for rectification thereof; (xvi) that even if since 2008 there has been concurrent user by the plaintiff of ‘OTRIVIN’ and by the defendant of ‘BIOTRIVIN’, such user, being not honest, is not concurrent user within the meaning of Section 12; (xvii) that all the invoices filed by the defendant before this Court to show sales of the product under the mark ‘BIOTRIVIN’ are to the own distributor of the defendant and there is nothing to show that there was any retail sale of any product under the mark ‘BIOTRIVIN’; (xviii) nothing else has been placed on record by the defendant to show that the product under the mark ‘BIOTRIVIN’ was available in the market before April, 2019; (xix) that the defendant has given no explanation of the reasons or circumstances in which it adopted the mark ‘BIOTRIVIN’; (xx) that since the defendants admit that the defendant no.1 is manufacturing and selling the product under the impugned mark, no mala fides can be attributed to the plaintiff and the manufacturer and seller of the goods under the impugned mark is the main defendant and/or is equally liable as the owner of the impugned mark; and, (xxi) the Act does not distinguish between the proprietor of the impugned mark and the manufacturer and seller of the goods under the impugned mark and the liability of both is the same.

13. Per contra, the senior counsel for the defendant has argued, (i) that because the mark of the defendants is registered, the suit, insofar as for the reliefs on the ground of infringement of trade mark, is barred by Section 28(3) of the Act; (ii) that the marks are not identical; at best they resemble each other; (iii) that as per Section 25 of the Act, no application for renewal of the mark is required to be made till the mark is registered; (iv) in any case the impugned mark, according to the plaintiff also, remains on the Register and it is not open to the plaintiff to contend that the registration of the impugned mark in favour of the defendant has lapsed; (v) Section 25(3) requires a notice to be given before removal of the mark and no notice has been given by the Registrar to the defendant till date; (vi) that the suit is also barred by Section 33 of the Act for the reason of the plaintiff having acquiesced for a continuous period of over five years in the use of a registered trade mark inspite of being aware of such use; (vii) whether the registration of the impugned mark applied for by the defendant was in good faith or not, is a matter of evidence and cannot be decided at this stage; (viii) that the application of the defendant for registration of ‘BIOTRIVIN’ was published on 1st July, 2007; (ix) the very fact that the plaintiff/its predecessor filed opposition thereto shows the knowledge of the plaintiff; however the plaintiff waited till 2019 before instituting the suit and during which time the defendant has been using the mark; the plaintiff by its such act acquiesced in the defendant expanding its business and for this reason only the plaintiff is not entitled to any interim relief; (x) that the two marks are totally different and the get up and the colour combination of the two products are also totally different; (xi) that had there been any mala fide on the part of the defendant, the defendant would have adopted similar get up and colour; (xii) that the mark of the defendant is dissimilar from the mark ‘OTRIVIN’ of the plaintiff because the mark of the defendant will be read as ‘BIO’ ‘TRIVIN’; (xiii) that there is no first syllable symmetry between the two marks; (xiv) that while the product of the plaintiff is not a Schedule-H drug and is an over the counter product, the product of the defendant is a Schedule-H drug available only on medical prescription; (xv) that the defendant is not a retailer of medicines and thus would sell only to its distributors; (xvi) the plaintiff is merely the proprietor of the mark and is not the user of the mark in India; admittedly the product under the mark ‘OTRIVIN’ in India is being marketed and sold by GSK Consumer Private Limited which is not the plaintiff; (xvii) only GSK Consumer Private Limited could have sued on the ground of passing off; (xviii) that the plaintiff, in spite of knowledge since 2008, did not sue for eleven years, till now, because knew that there is no possibility of confusion; reliance is placed on Kerly’s Law of Trade Marks and Trade Names Fourteenth Edition, in Chapter 15 paragraph 070 whereof it is opined that a claimant in an action founded on passing off must show not only goodwill and reputation but also damage thereto; there can be no damage to the plaintiff without the plaintiff having any sales in India; (xix) reference is generally made to Toyota Jidosha Kabushiki Kaisha Vs. Prius Auto Industries Limited (2018) 2 SCC 1 to contend that the continuing business of the defendant should not be interrupted at interim stage; it is offered that trial can be expedited; and (xx) that all the products of the defendant, a list whereof was handed over, have BIO prefixed thereto.

14. The counsel for the plaintiff, in rejoinder has again taken me through Section 25 of the Act.

15. I have considered the rival contentions.

16. I may at the outset state that though on the first date also when the suit had come up for admission, it was the prima facie view that the mark ‘BIOTRIVIN’ of the defendant is similar/deceptively similar and capable of being confused with the mark ‘OTRIVIN’ of the plaintiff, especially when both are nasal decongestants, but ex parte injunction was not granted merely for the reason of the knowledge of the plaintiff of the impugned mark since the year 2008, inspite of the plea of the plaintiff of the product under the impugned mark being not available in the market till April, 2019.

17. The contention of the senior counsel for the defendant, of the two marks being dissimilar, with the mark of the defendant reading as ‘BIO’ ‘TRIVIN’, finds no merit with me, though the argument is appreciated as ingenuity. However ingenuity of the counsel in a suit, can win cases only when related to facts. Here, from the defendant itself not writing its mark as ‘BIO’ ‘TRIVIN’ i.e. with space between ‘BIO’ and ‘TRIVIN’, but as ‘BIOTRIVIN’ with all the alphabets thereof equally placed from each other as one name, on the products of the defendant, the shallowness of the argument is evident. The photographs of the packaging of the product of the defendant are as under:-

“IMAGE”

18. Not only so, the registration applied for and obtained by the defendant is not as ‘BIO’ ‘TRIVIN’ but as “IMAGE”. It is today not open to the senior counsel for the defendant to convert the obvious similarity between ‘OTRIVIN’ and ‘BIOTRIVIN’ into a dissimilarity by splitting up the mark into ‘BIO’ and ‘TRIVIN’. Rather, making of such an argument by the senior counsel for the defendant, in my view, itself constitutes an admission of similarity/deceptive similarity of ‘OTRIVIN’ and ‘BIOTRIVIN’.

19. Merely because all products of the defendant have BIO prefixed thereto, would also not entitle the defendant to use the argument of “family of marks” to defend an action for infringement and/or passing off, if otherwise a case therefor is made out. Moreover, out of the said list of 281 products, mention can be made of BIOCILIN, BIOCIP, BIODERM, BIODEXONE, BIODINE, BIODIPIN, BIOGLUMIN, BIOREX, BIOTRAM and BIOGLITA where ‘BIO’ has been used disjunctively from the remaining part of the name.

20. I have during the hearing in fact drawn attention of the senior counsel for the defendant to prevalent practice in the market of, new variants of old well known medicine being given similar names to the old and well known medicine. Example was given of Crocin and the newer Crocin Pain Relief, Crocin Advance, Crocin 650, Crocin Cold & Flu, Crocin Drops etc. and it was enquired whether not a consumer of ‘OTRIVIN’ is likely to assume ‘BIOTRIVIN’ to be a variant of ‘OTRIVIN’ with which he/she is familiar, and the danger such confusion is likely to pose. Though both products are nasal decongestants, but while the chemical composition of ‘OTRIVIN’ is described on the packaging as Oxymetazoline Hydrochloride, that of ‘BIOTRIVIN’ is described as Xylometazoline. It is well nigh possible that consumption of ‘BIOTRIVIN’ by an old consumer of ‘OTRIVIN’ may trigger a reaction such as increased heart rate and allergy. Supreme Court in Cadila Healthcare Ltd. Vs. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73 has dealt with the danger which such marks pose in relation to pharmaceutical products and held that Courts need to be particularly vigilant when the defendant’s drug is meant for curing the same ailment as the plaintiff’s medicine, but the composition is different.

21. I thus find a case of similarity/deceptive similarity to have been made out.

22. Once that is so, it has been held in Staar Surgical Company Vs. Polymer Technologies International 2016 SCC OnLine Del 4813, Kanungo Media (P) Ltd. Vs. RGV Film Factory 2017 SCC OnLine Del 8763, Financial Times Ltd. Vs. Times Publishing House Ltd. 2016 SCC OnLine Del 5510, Jaideep Mohar Vs. Hub International Industries 2018 SCC OnLine Del 8199 and Mallcom (India) Limited Vs. Rakesh Kumar 2019 SCC OnLine Del 7646 that putting the suit to trial with each party examining self serving witnesses does not serve any purpose. Finding of similarity/dissimilarity, whether at this stage and/or at the stage of post trial, is unlikely to be different. It has not been argued that any evidence led would have any relevance thereto.

23. However, I am unable to agree with the contention of the counsel for the plaintiff, of the plaintiff being entitled to maintain a suit for infringement of trade mark. The rights of the plaintiff to the trade mark ‘OTRIVIN’ under Section 28 would be infringed under Section 29 of the Act by a defendant, who not being a registered proprietor, in the course of trade, uses a mark which is identical with or deceptively similar to the trade mark of the plaintiff. However the defendant here is the registered proprietor of ‘BIOTRIVIN’, from use whereof infringement is pleaded, and thus there can be no case for infringement. 24. No merit is found in the plea of the plaintiff, of the registration admitted of ‘BIOTRIVIN’ having stood lapsed. Reference in this regard may be made to Sections 23(1), 25 of the Trade Marks Act as under:-

“23. Registration

(1) Subject to the provision of section 19, when an application for registration of a trade mark has been accepted and either—

(a) the application has not been opposed and the time for notice of opposition has expired; or

(b) the application has been opposed and the opposition has been decided in favour of the applicant. the Registrar shall, unless the Central Government otherwise directs, register the said trade mark and the trade mark when registered shall be registered as of the date of the making of the said application and that date shall, subject to the provisions of section 154, be deemed to be the date of registration”

“25. Duration, renewal, removal and restoration of registration

(1) The registration of a trade mark, after the commencement of this Act shall be for a period of ten years, but may be renewed from time to time in accordance with the provisions of this section.

(2) The Registrar shall, on application made by the registered proprietor of a trade mark in the prescribed manner and within the prescribed period and subject to payment of the prescribed fee, renew the registration of the trade mark for a period of ten years from the date of expiration of the original registration or of the last renewal of registration. as the case may be (which date is in this section referred to as the expiration of the last registration).

(3) At the prescribed time before the expiration of the last registration of a trade mark the Registrar shall send notice in the prescribed manner to the registered proprietor of the date of expiration and the condition as to payment of fees and otherwise upon which a renewal of registration may be obtained, and, if at the expiration of the time prescribed in that behalf those conditions have not been duly complied with the Registrar may remove the trade from the register:

PROVIDED that the Registrar shall not remove the trade mark from the register if an application is made in the prescribed form and the prescribed fee and surcharge is paid within six months from the expiration of the last registration of the trade mark and shall renew the registration of the trade mark for a period of ten years under sub-section (2).

(4) Where a trade mark has been removed from the register for non-payment of the prescribed fee, the Registrar shall, after six months and within one year from the expiration of the last registration of the trade mark, on receipt of an application in the prescribed form and on payment of the prescribed fee, if satisfied that it is just so to do, restore the trade mark to the register and renew the registration of the trade mark either generally or subject to such conditions or limitations as he thinks fit to impose, for a period of ten years from the expiration of the last registration.”

and Rules 57, 58, 59, 60 and 61 of the Trade Marks Rules as under:

“57. Renewal of registration

(1) An application for the renewal of the registration of a trademark shall be made in Form TM-R along with the fee as prescribed in the Firsts schedule and may be made at any time not more than one year before the expiration of the last registration of the trademark.

(2) A request for renewal of registration of the trademark filed within prescribed time shall be allowed unless the trademark has been removed or cancelled or is otherwise not renewable under any of the provisions of the Act and rules or by any order of the competent court or the Registrar.

58. Notice before removal of trademark from register

(1) In case no application for renewal of the registration in the prescribed form together with the specified fee has been received, the Registrar shall send, not more than six months before the expiration of registration of the trademark, a notice in Form RG-3 at the address of service informing the registered proprietor of the approaching date of expiration and the conditions, if any, subject to which the renewal of the registration may be obtained.

(2) Where, in the case of a trademark the registration of which (by reference to the date of application for registration) becomes due for renewal, the trademark is registered at any time within six months before the date on which renewal is due, the registration may be renewed by the payment of the renewal fee within six months after the actual date of registration and where the renewal fee is not paid within that period, the Registrar shall subject to rule 60, remove the trademark from the register.

(3) Where, in the case of a trademark the registration of which (by reference to the date of application for registration) becomes due for renewal, the trademark is registered after the date of renewal, the registration may be renewed by the payment of the renewal fee within six months of the actual date of registration and where the renewal fee is not paid within that period the Registrar shall, subject to rule 60, remove the trademark from the register.

(4) The renewal of registration of a collective trademark or a certification trademark shall be in Form TM-R along with the prescribed fee as specified in the First Schedule.

59. Advertisement of removal of trademark from the register

If at the expiration of registration of a trademark, the renewal fees has not been paid, the Registrar may remove the trademark from the register and advertise the fact forthwith in the Journal:

PROVIDED that the Registrar shall not remove the trademark from the register if an application for payment of surcharge is made under proviso to sub-section(3) of section 25 in Form TM-R within six months from the expiration of the registration of the trademark.

60. Restoration and renewal of registration

An application for the restoration of a trademark to the register and renewal of its registration under sub-section (4) of section 25, shall be made in Form TM-R within one year from the expiration of the registration of the trademark accompanied by the prescribed fee. The Registrar shall, while considering the request for such restoration and renewal have regard to the interest of other affected persons.

61. Notice and advertisement of renewal and restoration

Upon the renewal or restoration and renewal of registration, a notice to that effect shall be sent to the registered proprietor and every registered user and the renewal or restoration and renewal shall be advertised in the Journal.”

25. It can be seen from aforesaid provisions that the registration of a mark, under Section 23(1) of the Act, dates back to the making of application for registration. Per Section 25(1), registration once granted, is for ten years. Once Section 23(1) makes the registration, even if granted subsequently, effective from the date of the application, the period of ten years would thus commence running from the date of application. Section 25(2) provides for renewal of registration for a period of ten years from the date of expiration of original registration or last renewal thereof. Applying the said provisions, the registration of the mark ‘BIOTRIVIN’ of the defendant, even though granted on 1st March, 2018, is effective from 16th November, 2005 and the period of ten years therefrom lapsed on 15th November, 2015 and the defendant was required to make an application for renewal therefor. Section 25(2) requires the application for renewal to be in the prescribed manner and within the prescribed period. The said manner and period have been prescribed in the Rules aforesaid by providing the application for renewal to be in form TM-R and the fee to accompany the same, and by further enabling the application to be made at any time not more than one year before the expiration of the last registration. However since per Section 25(2) and per Rule 57(1), the renewal can be made only after the original registration, the question arises, that if the registration itself is granted after ten years from the date of application, when is the renewal therefor to be applied. The answer with respect to registrations which are granted within six months before the date on which renewal is due is provided in Rule 58(2). The same provides for renewal to be applied within six months from the actual date of registration. With respect to applications for renewal of registrations granted after ten years, the provision is made in Rule 58(3) by requiring the application for renewal to be made within six months of the actual date of registration.

26. Thus the defendant was required to make the application for registration within six months of 1st March, 2018 and which has admittedly been not done.

27. Though Rule 58(3) provides that if such renewal is not made, the Registrar shall remove the trade mark from the Register, but the same is subject to Rule 60 providing for restoration of trade mark. Rule 60 provides for an application for restoration to be made within one year of the date of expiration of the registration. However, Section 25(4) which provides for restoration of the trade mark, itself begins with the qualifying ‘where a trade mark has been removed from the register for non-payment of the prescribed fee’. I have in Union of India Vs. Malhotra Book Depot 2013 SCC OnLine Del 828 (DB) (SLP(C) No.22014/2013 preferred whereagainst was dismissed on 26th July, 2013) noted in the context of Section 25(4) of the Trade and Merchandise Marks Act, 1958, and which is substantially the same in the Trade Marks Act, 1999, that it is strange that the right to restoration accrues on removal, but the time prescribed to apply for restoration is from the expiry of the last registration. It was held that Section 25(4) is applicable only where removal is simultaneous to the expiration and not where removal is affected much after the registration. It was also noted that neither the Act nor the Rules prescribe any limitation for applying for restoration and renewal in a situation where the removal of the mark is without the mandatory notice, and which situation remains the same, and it was further held that the only inference is that such an application can be at any time.

28. In the present case, the admitted position is that the mark ‘BIOTRIVIN’ has still not been removed.

29. Merit is found in the contention of the senior counsel for the defendant, that the non removal is not owing to ministerial act being not done. Notwithstanding the provisions making the mark liable for removal on no application being filed for renewal, Section 25(3) and Rule 58(1) require a notice to be given, and which notice in Malhotra Book Depot supra, Cipla Ltd. Vs. Registrar of Trade Marks 2013 SCC OnLine Bom 1270 and Gopal Ji Gupta Vs. Union of India (2019) 259 DLT 34 has been held to be mandatory.

30. It is not even the case of the plaintiff that such notice has been given. On the contrary it is the contention of the defendant that no notice has been given. 31. Thus the registration of the mark, till removal thereof, cannot be deemed to have lapsed. Resultantly the suit, insofar as for infringement, would be barred by Section 28(3).

32. That brings me to the two other oppositions of the senior counsel for the defendants to the entitlement of the plaintiff to the relief on the ground of passing off i.e. of (i) acquiescence and latches; and, (ii) the plaintiff, without being the seller/marketer of the goods, being not entitled to maintain an action for passing off.

33. As far as reference by the senior counsel for the defendant to Section 33 as under:-

“33. Effect of acquiescence

(1) Where the proprietor of an earlier trade mark has acquiesced for a continuous period of five years in the use of a registered trade mark, being aware of that use, he shall no longer be entitled on the basis of that earlier trade mark—

(a) to apply for a declaration that the registration of the later trade mark is invalid, or

(b) to oppose the use of the later trade mark in relation to the goods or services in relation to which it has been so used,

unless the registration of the later trade mark was not applied in good faith.

(2) Where sub-section (1) applies, the proprietor of the later trade mark is not entitled to oppose the use of the earlier trade mark, or as the case may be, the exploitation of the earlier right, notwithstanding that the earlier trade mark may no longer be invoked against his later trade mark.”

is concerned, the same is placed in Chapter-IV of the Act titled ‘Effect of Registration’ commencing from Section 27, sub section (2) whereof lays down that nothing in the Trade Marks Act shall be deemed the affect rights of action against any person for passing off goods or services as the goods or services of another or as services provided by another person, or the remedies in respect thereof. The Act itself, as per its preamble, is found to have been enacted to amend and consolidate the law relating to trade marks, to provide for registration and better protection of trade marks. Section 33 refers to the proprietor of an earlier trade mark. It does not refer to “registered proprietor or proprietor of an earlier registered trade mark”. The Act makes a distinction between a “proprietor” and a “registered proprietor”, with Section 2(v) thereof defining only the registered proprietor in relation to a trade mark as a person for the time being entered in the Register as proprietor of the trade mark. Thus when Section 33 refers to a ‘proprietor’ as distinct from ‘registered proprietor’, reference thereto is evidently to a proprietor of an earlier trade mark. Section 33 is found to be designed for the protection of a registered trade mark, by saving it from an action for passing off, by providing that if the proprietor of a mark has acquiesced in use of a registered trade mark for a period of five years, he/she shall not be entitled to apply for revocation of the mark or to oppose the use thereof. Reliance thereon by the senior counsel for the defendant in the facts of the present case is misplaced. The plaintiff herein is the registered proprietor of the subject tra

de mark ‘OTRIVIN’, and thus Section 33 is not attracted. 34. I find a Division Bench of this Court in Goenka Institute of Education & Research Vs. Anjani Kumar Goenka AIR 2009 Del 139 (DB) to have also held Section 33 to be with reference to the right of an unregistered user and a subsequent registered user. I must however hasten to also mention dicta of the High Court of Bombay in Emcure Pharmaceuticals Ltd. Vs. Corona Remedies Pvt. Ltd. 2014 SCC Online Bom 1064 and Neel Electro Techniques Vs. Neelkanth Power Solution 2014 SCC Online Bom 663, taking a view contrary thereto. It was held that Section 33 deals with the case of two registered trademarks, registered at different points of time and would have no application where one of the marks is not registered. I however do not find any reasoning given in either of the judgments for taking the said view, and am, with respect, unable to concur with the view taken by the High Court of Bombay. 35. Even otherwise, reliance by the counsel for the plaintiff on Hindustan Pencils Pvt. Ltd. supra is apposite. The use, even if any by the defendant of the mark since 2008, is with notice of opposition of the proprietors of earlier registered mark ‘OTRIVIN’ with respect thereto, and no defence of acquiescence is available to the defendant. 36. That brings me to the last opposition of the defendant, of the plaintiff, without selling the goods under the impugned mark in India, being not entitled to maintain an action for passing off. 37. The action for passing off, as distinct from an action for infringement, is an action in tort (Reference may be made to Bengal Waterproof Limited Vs. Bombay Waterproof Manufacturing Company (1997) 1 SCC 99, Haldiram Bhujiawala Vs. Anand Kumar Deepak Kumar (2000) 3 SCC 250 and Cadila Health Care Ltd. supra). Once, a tort is found to be committed, remedies of injunction restraining continuation of the tortuous act and of damages for past tortuous act, both are available to the plaintiff. The argument of the senior counsel for the defendant, of the plaintiff, without selling the goods under the subject mark in India, having not suffered any damages, can at best be a defence to the claim if any for damages for past tortuous act of the defendant. 38. The plaintiff has pleaded use of the subject mark not only in India but in several other countries. Though the defendant has denied the said averments in the plaint, but the said denial is not specific, as required in a pleading in a commercial suit. It has not been pleaded that the defendant has not found the product under the subject mark in other countries. Thus the said plea of the plaintiff has to be believed, at least at this stage. 39. Once the said plea is believed, then in today’s day of trans border movement, it is well nigh possible for a consumer of the product of the plaintiff under the subject mark from another jurisdiction, in India, confusing the product of the defendant being sold in India under the impugned mark, to be of the plaintiff, with a variation of ‘OTRIVIN’. Such possibility of confusion by itself entitles the plaintiff to the relief of injunction on the ground of passing off. The same will undoubtedly cause damage to the goodwill. 40. There is some merit also in the contention of the counsel for the plaintiff, of single economic unit, though I must state that the pleadings of the plaintiff in that respect are weak. The plaintiff has not even pleaded the relationship with GSK Consumer Private Limited. 41. I thus find the plaintiff to be having a prima facie case and balance of convenience in its favour. The possibility of the plaintiff, by the continuous tortuous act of passing off of the defendant, suffering irreparable injury, is self evident. 42. Most importantly, interim injunction in the present case is deemed to be necessary in public interest in terms of the dicta in Cadila Health Care Ltd. supra. 43. Once it is so, interim injunction has to follow. 44. IA No.6749/2019 is thus allowed. The defendant is restrained till the disposal of the suit from manufacturing, offering for sale and advertising in any manner whatsoever any products under the mark ‘BIOTRIVIN’ or any other mark similar or deceptively similar to the mark ‘OTRIVIN’ of the plaintiff. 45. The application is disposed of. PS: Though the application was heard on 3rd September, 2019 and order expected to be released shortly thereafter but has been delayed and is being listed for pronouncement in today’s date.